Takeaway: If a petitioner is attempting to prove that a prior art reference should have an effective date of an earlier provisional filing date, the petitioner must show not that the claims of the patent at issue are disclosed in the provisional filing, but that the portions of the prior art that are relied upon were carried over from the provisional filing.

In its Final Written Decision, the Board concluded that Petitioner failed to prove by a preponderance of the evidence that claims 1 and 12 of the ’196 Patent are unpatentable. The ’196 Patent is directed to methods for making molded plastic articles bearing a “lenticular” image, which is a segmented image comprising one or more component images.

The Board began by adopting its claim constructions from the Decision to Institute. The Board then discussed that trial was only instituted on the ground of anticipation by Raymond (U.S. Patent No. 7,153,555).  Patent Owner’s only argument in its Response was that Raymond does not qualify as prior art because the subject matter of claims 1 and 12 was reduced to practice before Raymond’s effective date as prior art under 35 U.S.C. § 102(e).

The Board stated that the parties dispute the effective date of Raymond as prior art. The application was filed on May 5, 2000 and claimed benefit of a provisional application filed on February 15, 2000.  Patent Owner argued that Petitioner failed to show that Raymond is entitled to the benefit of the earlier provisional filing date; therefore, the effective date is May 5, 2000.  Petitioner responded by providing a claim chart comparing claim 1, but not claim 12, of the ’196 Patent to the Raymond provisional.  The Board agreed with Patent Owner that Petitioner failed to prove by a preponderance of the evidence that Raymond is entitled to the benefit of the provisional filing date because Petitioner did not provide the analysis of common subject matter that is required by In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010), and Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).  Petitioner’s claim chart only compared one of the ’196 Patent claims to the Raymond provisional, rather than comparing the portions of Raymond’s patent relied upon by Petitioner to the Raymond provisional to demonstrate that those portions were carried over from the provisional.  Therefore, the Board found that the effective date of Raymond is May 5, 2000.

Next, the Board examined whether Patent Owner proved a reduction to practice of claims 1 and 12 prior to May 5, 2000, in order to antedate Raymond and eliminate it as a reference. The Board found that Patent Owner met its burden by relying on declaration testimony from two fact witnesses, the founder and president of Patent Owner and a former employee of Patent Owner, who both testified that the first test run of the injection-molded lenticular cosmetic case occurred between March 15 and March 28, 2000.  Petitioner relied upon the declaration from one of the named inventors, who testified that a June 2000 notebook entry stated that there was still a long way to go in preparing a molded lenticular item, and an expert in molded lenticular products, who stated that the cosmetic case that was created in March 2000 “does not represent a molded lenticular item in which distortion to the interlaced image has been minimized or in which degradation of the lenticular lens has been minimized.”

The Board then discussed the law of reduction to practice, stating that “the inventor must prove (1) that he constructed an embodiment or performed a process that meets all the claimed limitations of the invention, and (2) determined that the invention worked for its intended purpose.” The Board stated that the essential inquiry is whether the advance in the art was embodied in a workable device, but that there is no requirement of commercial perfection.  Testing is relevant evidence of whether the inventor would have known that an invention is suitable for its intended purpose, but the type of test is not what is important.

Turning to the parties’ arguments, Petitioner argued that Patent Owner’s “non-inventor” testimony is unreliable, especially when compared to its testimony from a named inventor, and that Patent Owner’s other evidence is inadequate, focusing on alleged deficiencies in the sample cosmetic case. The Board noted that the conflicting testimony in this case is unusual because usually the inventor is trying to establish an earlier date of invention.  The Board found that this testimony is explained because the inventor is currently employed by a company related to Petitioner, therefore, the inventor’s current interests are aligned against his patent and the Board found that this necessitated close scrutiny to his conclusions.  The Board found the June 2000 notebook page stating that the initial test on a custom part was “successful” to be more reliable evidence, and found that the entries discussing the remaining work perfecting the invention for commercialization do not prove that there was no reduction to practice.  The Board was also unpersuaded by Petitioner’s expert testimony because his microscopic review of the product would not be completed by consumers, and there was no evidence that the defects noted by the expert would be noticed by the naked eye.

The Board then discussed whether all the claim elements were met in the March 2000 cosmetic case. The parties disputed whether the case met the limitation requiring “minimiz[ing] any distortion to the lenticular lens and any degradation to the interlaced image.”  The Board’s construction of “minimizes” only requires that “the intended visual effect of the lenticular image still functions properly within the finished molded article.”  Therefore, the Board found that the cosmetic case met this limitation because it would have been acceptable to the consumer.

The Board then denied Patent Owner’s Motion to Amend as moot, and stated that it considered Patent Owner’s Motion for Observations.

Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131
Paper 42: Final Written Decision
Date: September 12, 2014
Patent 6,635,196
Before: Thomas L. Giannetti, Trenton A. Ward, and Mitchell G. Weatherly
Written by: Giannetti
Related Proceeding: National Graphics , Inc. v. Brax Ltd., No. 12-C-1119 (E.D. Wis.)